Equinor ASA v Sarah Vestal, Sarah Vestal Beauty and Aesthetics

WIPO Case No. D2024-3111

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equinor ASA v. Sarah Vestal, Sarah Vestal Beauty and Aesthetics

Case No. D2024-3111

1. The Parties

1.1 The Complainant is Equinor ASA, Norway, represented by Rouse AB (Valea AB trading as Rouse AB),

Sweden.

1.2 The Respondent is Sarah Vestal, Sarah Vestal Beauty and Aesthetics, United States of America (“United

States”).

2. The Domain Name and Registrar

2.1 The disputed domain name <equinoras.com> (the “Disputed Domain Name”) is registered with

NameCheap, Inc. (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2024. connection with the Disputed Domain Name. On July 30, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent (Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 31, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 31, 2024.

3.2 The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for

Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on August 5, 2024. In accordance with the Rules, paragraph
5, the due date for Response was August 25, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on August 26, 2024.

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3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on August 29, 2024. The Panel
finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

4.1 The Complainant Equinor ASA is a Norwegian corporation organised under the laws of Norway. The Complainant is an international energy company with operations in more than 30 countries developing oil, gas, wind, and solar energy. The Complainant was formerly known as Statoil and was founded as the

Norwegian State Oil Company in 1972 and later elected to change its name to Equinor in 2018. It is said that the Equinor mark inherited the famous status of the STATOIL mark and became known to everyone who knew Statoil before due to the widely publicised name change. Furthermore, the Complainant subsequently created a substantial IP portfolio as evidenced by the number of EQUINOR trademark applications that have been filed worldwide, including Internation registration number 1444675 for EQUINOR, registered on July 4, 2018. In addition, the Complainant is the owner of more than 100 domain name registrations worldwide containing the EQUINOR mark with both generic Top-Level Domains (“gTLD”) and country code Top-Level Domains (“ccTLD”), including the domain name for the Complainant’s official website <equinor.com>.

4.2 The Respondent in this proceedings is said to be based in the United States. The Disputed Domain Name was created on July 11, 2024, and resolves to a website containing the pay-per-click (“PPC”) links.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that it has satisfied each of the elements required under the Policy for a
transfer of the Disputed Domain Name.

5.2 Notably, the Complainant contends that upon a visual and or side by side comparison of the Disputed Domain Name with the Complainant’s EQUINOR trademark, the Panel would find that the requirement of confusing similarity has been established, since the Disputed Domain Name wholly incorporates the entire

EQUINOR trademark for the purposes of paragraph 4(a)(i) of the UDRP. See in this regard WIPO 1.7. As regards the added letters “as”, the Complainant contends that since the word “equinor” is the most distinctive element of the Disputed Domain Name, those letters, which could be perceived as the Norwegian company abbreviation for the word “Aksjeselskap” do not prevent a finding of confusing similarity. See in this regard WIPO Overview 3.0, section 1.8.

5.3 The Complainant further contends that the gTLD “.com” is not sufficient to prevent a confusing similarity finding as it is normally viewed as a standard registration requirement and therefore ought to be disregarded when conducting a confusing similarity test, following section 1.11.1 of the WIPO Overview 3.0.

5.4 The Complainant further submits that the Respondent has no rights to, or legitimate interests, in respect commercial gain and is not generally known by the Disputed Domain Name. Nor has the Respondent acquired any trademark or service mark right in that name or mark. In addition, it is submitted that the Respondent is neither using the Disputed Domain Name in connection with a bona fide offering of goods and services.
of the Disputed Domain Name, in that the Respondent is not affiliated or related to the Complainant in any
way, or licensed or otherwise authorised to use the EQUINOR trademark in connection with a website, a
domain name or for any other purpose. It is further contended that the Respondent is not using the

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registered and is using the Disputed Domain Name in bad faith considering that the Respondent elected to register a domain name that contains a mark that is identical to the Complainant’s trademark EQUINOR. In support of this assertion the Complainant alludes to the fact that the Respondent effected the registration of the Disputed Domain Name six years after the Complainant announced its name change in March 2018, having registered the Disputed Domain Name on July 11, 2024. Reference is equally made to the fact that the Disputed Domain Name displays a PPC site and on that basis, the Complainant contends that the	5.5 Turning to the question of bad faith, the Complainant also contends that the Respondent intentionally of bad faith use following WIPO Overview 3.0, section 3.5 thereof. In further support of bad faith use, the Complainant states that the MX-records have been activated and therefore, refers also to the possibility of a recipient receiving a potential email from “@equinoras.com” and believing that the email was sent in connection with the Complainant, since the Complainant’s official website also ends with the same gTLD “.com”
B. Respondent
5.6 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
6.1 It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Disputed Domain Name. WIPO Overview 3.0, section 1.7.
6.2 The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.
6.3 The entirety of the mark is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
6.4 The Panel finds the mark is recognizable within the Disputed Domain Name. Accordingly, the Disputed sections 1.7 and 1.8.
6.5 The Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
6.6 Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name.
6.7 Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

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6.8 Having reviewed the available record, the Panel finds the Complainant has established a prima facie relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise.

case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The

6.9 Furthermore, the Panel considers that the composition of the Disputed Domain Name carries a risk of implied affiliation with the Complainant. WIPO Overview 3.0, section 2.5.1. Moreover, the Respondent clearly intends to profit from the misdirection of Internet users expecting to find the Complainant given the use of the Disputed Domain Name for pay-per-click links through which the Respondent presumably derives

click-through revenue. WIPO Overview 3.0, section 2.5.3.

6.10 The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

6.11 The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4. In the present case, the Panel notes that the Respondent registered the Disputed Domain Name at least six years after the Complainant effected a name change in	6.12 Panels have consistently found that the mere registration of a domain name that is identical or and deliberately set out to take advantage of the worldwide reputation of the Complainant’s trademark with the intention of exploiting illicit financial gain.
6.13 Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section
3.2.1.
6.14 The Disputed Domain Name, which is inherently misleading, resolves to a website containing PPC links. The Panel finds that by using the Disputed Domain Name, the Complainant has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Such registration and use of the Disputed Domain Name constitutes bad faith under the paragraph 4(b)(iv) of the Policy.
6.15 The Panel finds that the Complainant has established the third element of the Policy.
7. Decision
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <equinoras.com> be transferred to the Complainant.
/Ike Ehiribe/ Ike Ehiribe Sole Panelist Date: September 12, 2024